Likelihood of confusion
U.S. Trademark Law Trademark registration Likelihood of confusion is a statutory basis15 U.S.C. §1052(d). for refusing registration of a trademark or service mark because it is likely to conflict with a mark or marks already registered or pending before the U.S. Patent and Trademark Office. After an application is filed, the assigned examining attorney will search the USPTO records to determine if such a conflict exists between the mark in the application and another mark that is registered or pending before the USPTO. The USPTO will not conduct any preliminary searches for conflicting marks before an applicant files an application and cannot provide legal advice on whether a particular mark can be registered. The principal factors considered by the examining attorney in determining whether there is a likelihood of confusion are: (1) the similarity of the marks; and (2) the commercial relationship between the goods and/or services listed in the application. To find a conflict, the marks do not have to be identical, and the goods and/or services do not have to be the same. It may be enough that the marks are similar and the goods and/or services related. If a conflict exists between your mark and a registered mark, the examining attorney will refuse registration on the ground of likelihood of confusion. Trademark infringement Likelihood of confusion is one of the elements a plaintiff must plead and prove to establish trademark infringement."In order to succeed on the merits, a plaintiff must establish that: (1) the marks are valid and legally protectible; (2) the marks are owned by the plaintiff; and (3) the defendants' use of the marks to identify goods or services is likely to create confusion concerning the origin of the goods and services." Opticians Ass'n v. Independent Opticians, 920 F.2d 187, 192 (3d Cir. 1990) (full-text). Each federal circuit court of appeals has its own multi-factor test for evaluating likelihood of confusion necessary to ground a trademark infringement claim. While the articulation of the factors varies somewhat, all of the tests address the same basic types of factors.See 4 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition §§ 24:30-24:43 (4th ed. 2010) (listing factors by circuit). These factors include the similarity of the marks, the similarity or relationship of the respective goods and/or services, the strength (inherent and marketplace) of the asserted mark, the commonality of trade channels and advertising methods, the sophistication of purchasers, whether the accused mark was adopted in bad faith, and the existence of actual confusion. Although no one factor is necessarily controlling, two key factors are the similarity between the marks and the proximity of the goods and/or services. Average purchasers retain only a general, rather than specific, impression of trademarks. Thus, to qualify as “similar,” marks need not be identical. Rather, the marks need only be sufficiently similar in the overall commercial impression they convey (e.g., they share sufficient similarities in one or more of the following factors: appearance, sound, or meaning). Likewise, the respective goods/services do not have to be identical or even competitive, and need only be related (e.g., they are of the same type, in the same field, used together, or marketed through the same channels of trade). Generally speaking, the more similar the marks, the less related the goods and/or services need to be to find a likelihood of confusion and the less similar the marks, the more related the goods and/or services need to be to find a likelihood of confusion. Third Circuit In Scott Paper Co. v. Scott's Liquid Gold,''589 F.2d 1225 (3d Cir. 1978) (full-text). the Third Circuit set forth the following factors to be considered: Second Circuit The Second Circuit, in Polaroid Corp. v. Polarad Elecs. Corp.,''287 F.2d 492 (2d Cir. 1961) (full-text). set forth the following factors: However, while a trial court considering the likelihood of confusion must evaluate the Polaroid factors, the Second Circuit has cautioned that the Polaroid factors are not always dispositive.Streetwise Maps, Inc. v. VanDam, Inc., 159 F.3d 739 (2d Cir. 1998) (full-text); Estee Lauder Inc. v. The Gap. Inc., 108 F.3d 1503 (2d Cir. 1997) (full-text). Moreover, courts may consider other variables in evaluating the likelihood of confusion, and irrelevant factors may be abandoned.See Gruner + Jahr USA Publishing v. Meredith Corp., 991 F.2d 1072, 1077 (2d Cir. 1993) (full-text). The unique facts of each case must be considered in evaluating the likelihood of confusion.W.W.W. Pharm. Co., Inc. v. Gillette Co., 984 F.2d 567, 572 (2d Cir. 1993) (full-text); Thompson Med. Co. v. Pfizer Inc., 753 F.2d 208, 214 (2d Cir. 1985) (full-text) ("The complexities attendant to an accurate assessment of likelihood of confusion require that the entire panoply of elements constituting the relevant factual landscape be comprehensively examined. No single Polaroid factor is pre-eminent, nor can the presence or absence of one without analysis of the others, determine the outcome of an infringement suit.") References Category:Trademark